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`Case IPR2015-______
`Petition for Inter Partes Review
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`AT&T MOBILITY, LLC
`AND
`CELLCO PARTNERSHIP D/B/A VERIZON WIRELESS
`Petitioners
`
`v.
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`SOLOCRON MEDIA, LLC
`Patent Owner
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`Case IPR2015-______
`Patent No. 7,742,759
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`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,742,759
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
`
`
`
`Mail Stop: Patent Board
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`

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`Case IPR2015-______
`Petition for Inter Partes Review
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`
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`TABLE OF CONTENTS
`
`
`I.
`
`INTRODUCTION AND BACKGROUND ........................................................ 1
`
`II. NOTICES, STATEMENTS AND PAYMENT OF FEES ................................. 2
`
`A. Real Parties In Interest Under 37 C.F.R. § 42.8(b)(1) .................................. 2
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ............................................. 2
`C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) .......................... 2
`D. Service Information Under 37 C.F.R. § 42.8(b)(4) ....................................... 3
`E. Grounds for Standing Under 37 C.F.R. § 42.104(a) ..................................... 3
`F. Fees Under 37 C.F.R. § 42.103 ..................................................................... 3
`III. THE ’759 PATENT ............................................................................................. 4
`
`A. Background .................................................................................................... 4
`IV. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(B) .......... 6
`
`V. HOW THE CHALLENGED CLAIM IS TO BE CONSTRUED UNDER 37
`C.F.R. § 42.104 (B) (3) ........................................................................................ 8
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`VI. DETAILED EXPLANATION AND SUPPORTING EVIDENCE UNDER 37
`C.F.R. §§ 42.104(B)(4) AND (B)(5) ................................................................... 8
`
`A. Claims 53, 54, 56, 59, 64, and 65 Are Anticipated by Merritt ..................... 8
`B. Claim 59 is Obvious over Merritt ............................................................... 24
`C. Claims 53, 54, and 59 Are Anticipated by Gaffney .................................... 25
`D. Claims 53, 54, 56, 59, 64, and 65 Are Obvious Over Merritt in View of
`Gaffney. ....................................................................................................... 34
`E. Claims 53, 56, 64, and 65 Are Anticipated by Apache ............................... 41
`F. Claims 53, 54, 56, 59, 64, and 65 Are Obvious Over Merritt in View of
`Apache. ........................................................................................................ 49
`VII. CONCLUSION ................................................................................................. 55
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`i
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`Case IPR2015-______
`Petition for Inter Partes Review
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`
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`PETITIONER’S EXHIBIT LIST
`
`Exhibit 1001
`
`U.S. Patent No. 7,742,759 (the ’759 patent)
`
`Exhibit 1002
`
`Exhibit 1003
`
`Excerpts of Documents Showing Mr. Shanahan’s Prosecution
`and Litigation Experience and Former Clients
`
`Complaint filed in Solocron v. AT&T Mobility. LLC, et al., (E.D.
`Tex.) (Case No. 2:13-cv-1059)
`
`Exhibit 1004
`
`U.S. Patent App. 08/175,022
`
`Exhibit 1005
`
`U.S. Patent No. 6,421,429
`
`Exhibit 1006
`
`Exhibit 1007
`
`Exhibit 1008
`
`Exhibit 1009
`
`Exhibit 1010
`
`International Publication Number WO98/19438, filed on
`October 28, 1996 and published on May 7, 1998
`
`Excerpts from: Lincoln Stein and Doug MacEachern, “Writing
`Apache Modules with Perl and C” (March 1999).
`
`Solocron’s Opening Claim Construction Brief, Dkt. No. 119,
`dated 11/21/2014, in Solocron v. AT&T Mobility, LLC, et al.,
`(E.D. Tex.) (Case No. 2:13-cv-1059)
`
`Declaration of Mr. Mark Lanning Regarding U.S. Patent No.
`7,742,759, dated 12/05/2014
`
`Schneidawind, John (November 23, 1992). "Poindexter Putting
`Finger on PC Bugs; Big Blue Unveiling". USA Today. p. 2B.
`ISSN 0734-7456 (1992 USA Today article describing IBM’s
`unveiling of a PDA cellular phone at Comdex)
`
`Exhibit 1011
`
`Exhibit 1012
`
`“Bellsouth, IBM unveil personal communicator phone”. Mobile
`Phone News, Nov. 8, 1993
`
`Maney, Kevin “Simon says: Super-phone is giant step”. USA
`Today, Nov. 3, 1993
`
`
`
`ii
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`Case IPR2015-______
`Petition for Inter Partes Review
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`
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`Petitioners AT&T Mobility, LLC and Cellco Partnership d/b/a Verizon
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`Wireless ( “Petitioners”) hereby request inter partes review of claims 53, 54, 56,
`
`59, 64, and 65 of U.S. Patent No. 7,742,759 (“the ’759 Patent”). Exhibit 1001.
`
`I.
`
`INTRODUCTION AND BACKGROUND
`
`The ’759 patent is part of a family of nearly twenty patents owned by
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`Solocron Media, LLC (“Solocron”), a small company based in Tyler, Texas near
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`the Eastern District of Texas courthouse. Solocron acquired this portfolio from
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`Michael Shanahan, a telecommunications and electronics patent prosecutor
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`formerly of Fish & Neave and McDermott Will & Emery. See, e.g., Exhibit 1002.
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`Mr. Shanahan’s clients over the past fifteen years include Nokia, Inc. (“Nokia”)
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`and other well-known electronics companies. Exhibit 1002.
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`Solocron alleges that the ’759 patent relates to converting video files at an
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`intermediate server. File conversion was well-known long before the ’759 patent,
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`as evidenced by AT&T’s U.S. Patent No. 6,421,429 (“Merritt”), which discloses
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`the claimed concepts using nearly identical terminology. Merritt is one example of
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`invalidating prior art that was not presented to the Patent Office during the
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`prosecution of the ’759 patent or any of the applications to which it claims priority.
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`1
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`Case IPR2015-______
`Petition for Inter Partes Review
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`
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`For the reasons below, there is a reasonable likelihood that claims 53, 54, 56,
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`59, 64, and 65 of the ’759 patent are unpatentable in light of the prior art,
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`warranting inter partes review.
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`II. NOTICES, STATEMENTS AND PAYMENT OF FEES
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`A. Real Parties In Interest Under 37 C.F.R. § 42.8(b)(1)
`
`
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`The real parties in interest are AT&T Mobility, LLC and Cellco Partnership
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`d/b/a Verizon Wireless.
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`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`
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`Solocron sued the following entities (in addition to AT&T Mobility, LLC
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`and Verizon Wireless) for infringement of the ’759 Patent in the Eastern District of
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`Texas on December 6, 2013 (Case No. 2:13-cv-01059) (hereinafter, “the
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`Litigation”): Sprint Corporation, Sprint Communications Company L.P., Sprint
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`Solutions Inc., and T-Mobile USA, Inc. See Exhibit 1002.
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`C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
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`
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`Petitioners designate lead and back-up counsel as noted below. Powers of
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`attorney pursuant to 37 C.F.R. § 42.10(b) accompany this Petition.
`
`For Petitioner Cellco Partnership d/b/a Verizon Wireless
`Lead Counsel
`Backup Counsel
`Kevin P. Anderson, Reg. No. 43,471
`Floyd B. Chapman, Reg. No. 40,555
`Scott A. Felder, Reg. No. 47,558
`WILEY REIN LLP, ATTN: Patent Administration, 1776 K Street NW,
`Washington, DC 20006, Phone: 202.719.7000 / Fax: 202.719.7049
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`Case IPR2015-______
`Petition for Inter Partes Review
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`
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`For Petitioner AT&T Mobility LLC
`Lead Counsel
`Backup Counsel
`Theodore Stevenson, III, Reg. No. 39,040
`Scott W. Hejny, Reg. No. 45,882
`
`Nicholas Mathews, Reg. No. 66,067
`MCKOOL SMITH PC, 300 Crescent Court, Suite 1500, Dallas, TX 75201
`Phone 214.978.4000 / Fax 214.978.4044
`
`
`D.
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`Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`
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`Please address all correspondence to lead counsel at the address above.
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`AT&T Mobility, LLC consents
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`to electronic
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`service by email at:
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`shejny@mckoolsmith.com and nmathews@mckoolsmith.com. Verizon Wireless
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`consents to electronic service by email at: kanderso@wileyrein.com and
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`fchapman@wileyrein.com.
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`E. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`
`Petitioners certify pursuant to 37 C.F.R. § 42.104(a) that the ’759 patent is
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`available for inter partes review, and that Petitioners are not barred or estopped
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`from requesting inter partes review based on the grounds identified herein.
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`Petitioners also certify this petition for inter partes review is filed within one year
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`of the date of service of the complaint discussed above.
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`F.
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`Fees Under 37 C.F.R. § 42.103
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`
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`AT&T Mobility, LLC is concurrently submitting fees of $23,000. To the
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`extent any additional fees are deemed necessary to accord this Petition a filing
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`3
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`Case IPR2015-______
`Petition for Inter Partes Review
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`date, authorization is hereby granted to charge the same to Deposit Account No.
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`50-5723 with reference to Attorney Docket No. 01869-10IP759.
`
`III. THE ’759 PATENT
`A. Background
`
`The ’759 patent was filed on December 2, 2006, and purports to claim
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`priority to applications dating back to December 1999. Exhibit 1001. Though
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`Solocron has asserted this patent against AT&T’s and Verizon’s servers that
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`process Multimedia Messaging Service (“MMS”) messages, the ’759 patent makes
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`no reference to MMS or any other type of messaging service. Rather, the ’759
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`patent specification is entirely directed to user-defined downloadable ringtones.
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`Mr. Shanahan filed 7 patents covering almost 250 claims before filing the ’759
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`patent, all of which related to downloadable ringtones and not file format
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`conversion. Mr. Shanahan waited until 2006—when transcoding servers were
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`widely used throughout the telecommunications industry—to file his first format
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`conversion patent.
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`In support of his 2006 claims, Mr. Shanahan relied on an embodiment in the
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`specification relating to converting and downloading user-defined ringtones.
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`Figure 1 depicts a “source 50,” a “device programmer 30,” and a “device 20”:
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`4
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`Case IPR2015-______
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`’759 Patent, Fig. 1. “Device 20” selects a user-defined file from a “source 50,”
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`such as the Internet. Id. at 3:30-41. The file is then transmitted to “device
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`programmer 30” that converts the file to a format compatible with “device 20.” Id.
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`“Device 20” then downloads the user-defined file and may retrieve it when a
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`certain even occurs, e.g., when receiving an incoming call. Id.
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`Servers that performed this type of format conversion were well known in
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`the art long before Mr. Shanahan filed his family of his patents. Indeed, more than
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`six years before Mr. Shanahan filed his provisional application and thirteen years
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`before Mr. Shanahan filed the ’759 patent, AT&T filed a patent application that
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`disclosed every element of Mr. Shanahan’s alleged invention. Exhibit 1004.
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`Patent Application No. 07/175022, filed in 1993, describes a “method and system
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`Case IPR2015-______
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`for communicating images across a network among users with disparate end
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`systems running potentially dissimilar image protocols and formats.” Id. at 1:2-5.
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`The application teaches a “network-based image processing system” that receives
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`“an originating image,” “converts the originating image file to the format and
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`protocol of the called party,” and then communicates the image to the called party.
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`Id. at 2:15-3:13. The application explained that the “image file” converted could
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`be a video file. (“At this platform, conversion among the two video formats takes
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`place entirely within the digital domain, without returning to baseband analog
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`video, as is commonplace for current video conversions.”). Id. at 16:4-6. About
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`four years after filing this patent application, AT&T filed a continuation-in-part
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`that was ultimately granted as U.S. Patent No. 6,421,429 (the “Merritt” patent),
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`described in detail below. Exhibit 1005.
`
`IV.
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`IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(b)
`
`
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`Petitioners requests inter partes review of claims 53, 54, 56, 59, 64, and 65
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`of the ’759 patent, in view of the references identified below.
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`1. Merritt, U.S. Patent No. 6,421,429, filed March 18, 1998 and
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`published July 16, 2002. Exhibit 1005. This reference is prior art under 35 U.S.C.
`
`§ 102(e). The Office never considered Merritt during prosecution.
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`Case IPR2015-______
`Petition for Inter Partes Review
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`2.
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`Gaffney, WO98/19438, filed October 29, 1996 and published May 7,
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`1998. Exhibit 1006. This reference is prior art under 35 U.S.C. § 102(b). The
`
`Office never considered Gaffney during prosecution.
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`3.
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`Apache, “Writing Apache Modules with Perl and C” by Lincoln Stein
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`and Doug MacEachern, was published on March 31, 1999. Exhibit 1007. This
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`reference is prior art under 35 U.S.C. § 102(a). The Office never considered
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`Apache during prosecution.
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`
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`Petitioners request that claims 53, 54, 56, 59, 64, and 65 be cancelled based
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`upon the following grounds, as explained in detail below (including relevant claim
`
`constructions): Ground 1: claims 53, 54, 56, 59, 64, and 65 are invalid under 35
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`U.S.C. § 102 as anticipated by Merritt; Ground 2: claim 59 is invalid under 35
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`U.S.C. § 103 as obvious over Merritt; Ground 3: claims 53, 54, and 59 are invalid
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`under 35 U.S.C. § 102 as anticipated by Gaffney; Ground 4: claims 53, 56, 64. and
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`65 are invalid under 35 U.S.C. § 102 as anticipated by Apache; Ground 5: claims
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`53, 54, 56, 59, 64, and 65 are invalid under 35 U.S.C. § 103 over Merritt in view of
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`Gaffney; Ground 6: claims 53, 56, 64, and 65 are invalid under 35 U.S.C. § 103
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`over Merritt in view of Apache.
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`7
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`Case IPR2015-______
`Petition for Inter Partes Review
`
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`V. HOW THE CHALLENGED CLAIM IS TO BE CONSTRUED UNDER
`37 C.F.R. § 42.104 (b) (3)
`
`
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`In this proceeding, claim terms are given a broadest reasonable interpretation
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`consistent with the specification and prosecution history. See Office Patent Trial
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`Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012); 37 C.F.R. § 100(b).
`
`None of the claim terms at issue require a construction. All terms should be given
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`their plain and ordinary meaning.
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`VI. DETAILED EXPLANATION AND SUPPORTING EVIDENCE
`UNDER 37 C.F.R. §§ 42.104(b)(4) AND (b)(5)
`
`Pursuant to 37 C.F.R. §§ 42.104(b)(4) and (b)(5), Petitioners set forth an
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`explanation below of why claims 53, 54, 56, 59, 64, and 65 of the ’759 patent is
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`unpatentable under
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`the statutory grounds
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`identified above,
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`including
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`the
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`identification of where each element is found in the prior art patents or printed
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`publications. The claim charts identify the supporting evidence relied upon to
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`support the challenge by exhibit number and set forth the relevance of the evidence
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`to the challenge raised, including an identification of those specific portions of the
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`evidence that support the challenge. An Exhibit List (see 37 C.F.R. § 42.63(e))
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`identifying the exhibits is also included, supra, at p. iii.
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`A. Claims 53, 54, 56, 59, 64, and 65 Are Anticipated by Merritt
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`More than six years before Mr. Shanahan filed his earliest application (and
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`thirteen years before Mr. Shanahan filed the ’759 patent), AT&T filed a patent
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`Case IPR2015-______
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`application for a “method and system for communicating images across a network
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`among users with disparate end systems running potentially dissimilar image
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`protocols and formats.” Exhibit 1004. About four years after filing this patent
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`application, AT&T filed a continuation-in-part that was ultimately granted as U.S.
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`Patent No. 6,421,429 (the “Merritt” patent). Exhibit 1005.
`
`Merritt discloses an “image communications session manager,” as shown in
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`Figure 4b from the patent below.
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`
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`Merritt, Fig. 4B. The image communications session manager is a server that
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`receives an image or video file sent from a first device to a second device,
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`determines the format capabilities of the second device, compares the format of the
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`file to the format capabilities of the second device, if necessary converts the format
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`9
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`Case IPR2015-______
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`of the file, and then allows the second device to download the video file for
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`subsequent use. As will be described in more detail below, Merritt discloses that
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`the file communicated may be a video, the user-devices may be wireless
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`telephones, the file type may be converted to and from JPEG and MPEG, and the
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`file conversion can be a lossy native payback format to a lossy native playback
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`format.
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`Thus, AT&T invented and disclosed all features recited in 53, 54, 56, 59, 64,
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`and 65 more than eighteen months before Mr. Shanahan filed his earliest
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`application and more than eight years before he submitted the application that
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`became the ’759 patent. Mr. Mark Lanning, a telecommunications expert with a
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`BS in computer science and over 38 years of experience in the telecommunications
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`industry, has included an invalidity analysis of Merritt in his expert declaration and
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`concluded that Merritt discloses each of the claims below. Exhibit 1009 at ¶¶ 27-
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`60. Claim charts showing the anticipatory nature of Merritt are below.
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`Claim Element
`53. A programmable
`memory having
`stored thereon a
`plurality of sequences
`of instructions
`including sequences
`of instructions which,
`when executed by one
`or more processors
`
`Where Each Element is Found in Merritt
`Merritt discloses a programmable memory having stored
`thereon a plurality of sequences of instructions including
`sequences of instructions. For example, Merritt discloses
`an “image communications sessions manager” that has a
`programmable memory having stored thereon a plurality
`of sequences of instructions.
`
`example, Merritt provides
`image
`the
`that
`For
`communications session manager must include “memory
`
`
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`Case IPR2015-______
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`Claim Element
`cause one or more
`electronic devices to:
`
`
`Where Each Element is Found in Merritt
`storage devices” and “one or more programmable
`computers or workstations.” Id., 4:8-14.
`
`“A system is disclosed which enables a multitude of
`dissimilar end-system devices, appliances, and platforms
`to interchange image information. The inventive method
`utilizes a directory database of end-user profiles, a session
`manager, a conversion manager, individual conversation
`processors, a queuing database, and a store-and-forward
`file-folder database.” Merritt, Abstract.
`Merritt discloses a programmable memory having stored
`thereon a plurality of sequences of instructions including
`sequences of instructions which, when executed by one or
`more processors cause one or more electronic devices to
`receive a video file in a native playback format.
`
`For example, in the summary of the invention, Merritt
`explains that a file is received by a network-based image
`processing system in a native playback format: “[a]
`communication of an originating image from a calling
`party to a called party is diverted to the network-based
`image processing system. The network-based image
`processing system ascertains whether the originating
`image file format and protocol matches the called party
`preferred file format and protocol, which is stored in the
`data base.” Id., 2:1-7 (emphasis added).
`
`Merritt discloses the reception of the file in Fig. 4B, which
`depicts an “originating image” being sent from “calling
`device (30)” to the “image communications session
`manager (22),” as shown below.
`
`53[a]. receive a video
`file in a native
`playback format;
`
`
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`Case IPR2015-______
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`Claim Element
`
`Where Each Element is Found in Merritt
`
`
`
`
`
`Fig. 4B (emphasis added).
`
`Fig. 1B also discloses the image communications session
`manager receiving an image file in a native playback
`format. The specification explains that in step 101, “a
`calling party 18 initiates an image communication to
`called part 20. This communication arrives at the
`network image processing node 12 (step 103), and the
`originating party’s sending file format and protocol is
`compared to the preferred profile for the terminating party
`through a
`look-up procedure
`in
`the network-based
`database 14 (step 105).” Id., 3:8-15 (emphasis added).
`
`Merritt also explains that the received file can be a video
`file:
`
`For example, Merritt states that the “system may support
`myriad image media (e.g., facsimile, video, graphics,
`etc.), as well as multiple formats of any given medium,
`and may convert between different formats of the same
`medium and between formats of different media as
`required to provide the preferred or optimum format
`and/or protocol for receiving the image at the endpoint.”
`Id., 10:18-24 (emphasis added).
`
`“Dialable video services may
`
`include conversions
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`Case IPR2015-______
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`Claim Element
`
`the programmable memory
`
`Where Each Element is Found in Merritt
`among various video standards and among different
`video performance levels. A specific example is a
`teleconferencing application in which a 64 Kb/sec codec at
`one location needs to connect to a codec at another
`location that adheres to another video standard, say MPEG
`(Motion Picture Experts Group) at 1.5 MB/sec.” Id., 8:50-
`56 (emphasis added).
`
`Additional disclosure of
`receiving a file:
`
`“FIG. 3B illustrates the signaling which occurs when a
`calling subscriber initiates an image communication with
`an image file match to the called device, and wherein the
`communication occurs using the store-and forward mode.
`As discussed above, the store-and-forward mode may be
`selected by the calling party,…” Id., 6:37-42.
`
`“FIG. 5 illustrates the information flow which occurs
`when the originating image does not match the preferred
`format and/or protocol of the terminating device, and the
`file cannot be converted by the nodal image processor. In
`such an instance, as above, the communications session
`manager 22
`first
`receives
`the originating
`image
`communication, and queries the image profile database 24,
`determining that a conversion is required.” Id., 7:35-39.
`Merritt discloses converting the video file to a native
`playback format usable by a playback device. For
`example, in the summary of the invention, Merritt
`provides that the network-based image processing system
`converts the file to the format usable by the called party:
`
`“A communication of an originating image from a calling
`party to a called party is diverted to the network-based
`image processing system. The network-based
`image
`processing system ascertains whether the originating
`image file format and protocol matches the called party
`
`53[b]. convert the
`video file to a native
`playback format
`usable by a playback
`device; and
`
`
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`Case IPR2015-______
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`Claim Element
`
`Where Each Element is Found in Merritt
`preferred file format and protocol, which is stored in the
`data base. If there is no match, the processing system
`appropriately converts the originating image file to the
`format and protocol of the called party.” Id., 2:1-9
`(emphasis added).
`
`Merritt also provides that a server in the network
`compares the format of the originally transmitted file to
`the capabilities of the receiving station and performs
`conversion if necessary:
`
`“The network service uses the information about the
`originally transmitted image (i.e., format and/or protocol,
`and preferably also image type information) and the
`capabilities (and possibly also preferences) of
`the
`receiving station to select the best possible match or
`preferred image format and/or protocol from among the
`image file formats and/or protocols that are supported by
`the receiving station. The network performs any
`transcoding or
`image
`transformations
`that are
`necessary.” Id., 10:44-52 (emphasis added).
`
`Merritt explains that when the format of the received file
`does not match the format of the called device, the image
`communications session manager converts the received
`file to a format usable by the called device:
`
`“The image communications session manager 22 then
`routes the originating image to the image format and
`protocol conversion process controller 26 which, in turn,
`routes the image data to an appropriate conversion
`processor. The conversion process controller 26 selects an
`appropriate conversion processor based on factors such as
`functionality, as well as availability and load balancing
`(e.g., queue management). Originating image data that
`has been converted is then routed to the called device via
`the conversion process controller 26 and the image
`
`
`
`14
`
`

`

`Case IPR2015-______
`Petition for Inter Partes Review
`
`
`
`Claim Element
`
`Where Each Element is Found in Merritt
`communications session manager 22.” Id., 7:10-26.
`
`As noted in the analysis for claim 53, element (a), Merritt
`provides that the converted file can be a video file.
`
`Additional disclosure of converting the received file:
`
`“If the originating and terminating image file formats
`do not match, however, then the network-based service
`will invoke and attach image converter server 16 which
`will perform the necessary file format and protocol
`conversions (step 109), followed by establishing a
`connection
`to
`the called party
`(step 111)
`for
`communicating the converted file.” Id., 3:18-23 (emphasis
`added).
`
`“The image file format conversion server converts the
`calling party image file to the acceptable or preferred
`image file format of the called party, depending on the
`option(s) selected by the calling party. This server
`preferably includes conversion control processor 26 and
`one or more conversion processors 271, 272, . . . 27n.” Id.,
`5:12-17 (emphasis added).
`Merritt discloses allowing a user to download the video
`file to a playback device for subsequent use at a time
`specified by the user. Merritt provides that the converted
`video file can be either sent directly to the second device
`or stored and made available for the second device to
`download.
`
`For example, Merritt discloses a “store-and-forward
`mode” for which the “image communications session
`manager” outputs the converted file to a session storage
`device and notifies the called user that the file is available
`for download. Merritt explains that “the converted data is
`output to the session storage device 28 (FIG. 4B), and the
`image communication session manager 22 then initiates a
`
`53[c]. allow a user to
`download the video
`file to a playback
`device for subsequent
`use at a time specified
`by the user.
`
`
`
`
`15
`
`

`

`Case IPR2015-______
`Petition for Inter Partes Review
`
`
`
`Claim Element
`
`Where Each Element is Found in Merritt
`communication to the called device (e.g., voice-mail or e-
`mail) indicating that a file has been stored.” Id., 7:27-31.
`
`Merritt further describes the “store-and forward mode” in
`reference to Fig. 3B. Merritt explains that instead of
`sending the file directly to the called device, the image
`communications session manager sends the file to the
`session storage device for storage and notifies the called
`device that the file is available for download:
`
`immediately establishing a
`instead of
`“However,
`called
`device,
`the
`image
`to
`the
`connection
`communications session manager establishes a connection
`from the calling device to the session storage device which
`stores
`the
`converted
`image
`data. The
`image
`communications
`session manager
`then
`initiates a
`communication, by voice-mail and/or e-mail for example,
`to the called device station using a station identifying
`number (e.g., phone number) stored in the image profile
`database 24. This communication indicates that an image
`file is stored at the image nodal processor.” Id., 6:53-62.
`
`Alternatively, Merritt
`“image
`the
`discloses
`communications manager” communicating the converted
`file directly to the called device. Merritt explains that the
`“[o]riginating image data that has been converted is then
`routed to the called device via the conversion process
`controller 26 and the image communications session
`manager 22.” Id., 7:23-26.
`
`As noted in the analysis for claim 53, element (a), Merritt
`provides that the transmitted image can be a video.
`
`Additional disclosure of allowing a user to download the
`video file:
`
`“If there is no match, the processing system appropriately
`
`
`
`16
`
`

`

`Case IPR2015-______
`Petition for Inter Partes Review
`
`
`
`Claim Element
`
`Where Each Element is Found in Merritt
`converts the originating image file to the format and
`protocol of the called party. The image file is then
`communicated to the third-party.” Merritt, 2:4-10
`(emphasis added).
`
`“If the originating and terminating image file formats do
`not match, however, then the network-based service will
`invoke and attach image converter service 16 which will
`perform the necessary file format and protocol conversions
`(step 109), followed by establishing a connection to the
`called party
`(step 111)
`for communicating
`the
`converted file.” Id., 3:18-23 (emphasis added).
`Merritt discloses the programmable memory of claim 53
`wherein the plurality of sequences of instructions further
`comprise instructions which, when executed by one or
`more processors cause one or more electronic devices to
`determine at least one native playback format compatible
`with the playback device. Merritt provides that the
`network-based image processing determines the format
`capabilities of the receiving party either by querying the
`receiving party or by looking up the receiving party’s
`compatible formats in a table.
`
`For example, Merritt provides that the network-based
`image processing system can determine
`the native
`playback format compatible with the receiving device
`from an “image profile database.” Merritt explains that
`this database “contains a multiparameter field for each
`subscriber, the elements of which describe the image file
`formats and protocols that can be accepted by this
`subscriber, as well as the preferred file format and
`protocol.” Id., 4:16-20. Once a file is received, the
`“image communications session manager 22 accesses
`the image profile database 24 to ascertain whether the
`originating image format and protocol matches that
`used or preferred by the called device.” Id., 6:28-31
`(emphasis added).
`
`54. The
`programmable
`memory of claim 53
`wherein the plurality
`of sequences of
`instructions further
`comprise instructions
`which, when executed
`by one or more
`processors cause one
`or more electronic
`devices to determine
`at least one native
`playback format
`compatible with the
`playback device.
`
`
`
`
`17
`
`

`

`Case IPR2015-______
`Petition for Inter Partes Review
`
`
`
`Claim Element
`
`Where Each Element is Found in Merritt
`
`
`Merritt also provides that “[i]f the called party is not a
`subscriber, then the network may obtain the preferred
`format and protocol by prompting the called party.”
`Id., 9:9-11 (emphasis added).
`
`Additional disclosure of determining at least one native
`playback format compatible with the playback device:
`
`“The network-based image processing system ascertains
`whether the originating image file format and protocol
`matches the called party preferred file format and protocol,
`which is stored in the data base.” Id., 2:4-8.
`
`“In step 101, a calling party 18 initiates an image
`communication to called party 20. This communication
`arrives at the network image processing node 12 (step
`103), and the originating party’s sending file format and
`protocol is compared to the preferred profile for the
`terminating party through a look-up procedure in the
`network-based database 14 (step 105).” Id., 3:8-14.
`
`“The image communications session manager 22 accesses
`the image profile database 24 to ascertain whether the
`originating image format and protocol matches that used
`preferred by the called device.” Id., 6:27-31.
`
`“For instance, if the called party is not a subscriber, then
`the network may obtain the preferred format and protocol
`by prompting the called party.” Id., 9:9-11.
`
`“The receiving party may have established with the
`network service a profile that preferably specifies which
`formats (e.g., including compression schemes) it supports,
`as well as its capabilities and/or preferences in terms of
`other image parameters, such as resolution, number of
`colors, etc.” Id., 10:35